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PATENTS
Protecting innovation is critical for those seeking to maximize the potential of new products and processes. At Nixon Peabody, we help businesses safeguard their innovations through patents. Our Patents practice assists clients in maximizing the revenue generated by their products and processes by providing a full range of services related to patent procurement. Since 2010, the efforts of Nixon Peabody’s patent practice have resulted in the issuance of more than 2,100 patents and the filing of 4,420 new patent applications in the United States.
Patent procurement services
- Strategic portfolio management
- Preparing and prosecuting patent applications, both in the United States and internationally
- Conducting patentability and validity studies
- Correcting errors in issued patents
- Conducting patent interference proceedings and new post grant actions before the U.S. Patent and Trademark Office
- Preparing infringement analysis and opinions
- Licensing and assignments
Experienced attorneys
As one of the leading patent procurement law firms in the U.S., Nixon Peabody has a wealth of knowledge and experience working with the U.S. Patent and Trademark Office (USPTO). Our patent prosecution attorneys are among the most experienced in handling interference procedures, the current inter partes procedure used in the USPTO to determine priority among competing applications to patent the same invention. Our attorneys also have substantial experience in prosecuting reissue applications and reexaminations of issued United States patents. Our attorneys are at the forefront of patent reform—monitoring changes and preparing our clients for how the America Invents Act will impact their patent strategy.
The hands-on patent experience of our attorneys and agents is complemented by their rich technical educations and industry experience in a variety of engineering fields, including:
- Electronics
- Electromechanical
- Biotechnology
- Life sciences
- Chemistry
- Computer software
- Mechanics
Worldwide patent protection
We regularly act as U.S. counsel in intellectual property matters for companies in Europe, Asia, North America, and South America. Nixon Peabody’s international intellectual property team has established personal, longstanding relationships with companies and attorneys throughout the world, particularly in Japan, Korea, China, Hong Kong, Singapore, Australia, Canada, India, the United Kingdom, Spain, and Germany, that help them understand the different local economic and legal motivations driving companies in each of these jurisdictions. We also help U.S. companies secure intellectual property rights abroad through a well-established, worldwide network of legal experts.
Representative Experience- Assist a major software company in protecting its breakthrough advances in the areas of science and engineering and successfully defended the company against three reexamination attempts by third parties
Assist a major software company in protecting its breakthrough advances in the areas of science and engineering and successfully defended the company against three reexamination attempts by third parties - Manage a portfolio of U.S. and international patents on behalf of one the largest companies in the computer entertainment and video game industry
Manage a portfolio of U.S. and international patents on behalf of one the largest companies in the computer entertainment and video game industry - Conduct IP due diligence on behalf of a large semiconductor company related to potential acquisition targets
Conduct IP due diligence on behalf of a large semiconductor company related to potential acquisition targets . . . View all . . .
- Advise a leading currency authentication company with respect to managing a wide portfolio of U.S. and foreign patent
Advise a leading currency authentication company with respect to managing a wide portfolio of U.S. and foreign patent
- Represent a large media company in various IP transactions, including licensing arrangements
Represent a large media company in various IP transactions, including licensing arrangements
- Handle technology transfer and licensing work on behalf of a leading academic medical center
Handle technology transfer and licensing work on behalf of a leading academic medical center
- Represent one of the world’s most recognized energy companies in a variety of licensing transactions, as well as a joint venture
Represent one of the world’s most recognized energy companies in a variety of licensing transactions, as well as a joint venture
- Conduct IP due diligence on behalf of a financial service firm related to its investment in a third party
Conduct IP due diligence on behalf of a financial service firm related to its investment in a third party
- Work with one of the leading academic institutions in the United States to develop and execute an overall patent strategy for a water purification technology; this technology is particularly promising for under-developed countries
Work with one of the leading academic institutions in the United States to develop and execute an overall patent strategy for a water purification technology; this technology is particularly promising for under-developed countries
- Provide U.S. and international patent prosecution services to one of the leading global manufacturers of conveyor belts for food processing and other applications
Provide U.S. and international patent prosecution services to one of the leading global manufacturers of conveyor belts for food processing and other applications
- Assist a cutting-edge stem cell institute in devising and executing strategies that will extract the greatest value from their IP and also assist the institute in maneuvering around other people’s patents
Assist a cutting-edge stem cell institute in devising and executing strategies that will extract the greatest value from their IP and also assist the institute in maneuvering around other people’s patents
- Manage an extensive patent portfolio on behalf of one of the leading wireless telecommunications companies
Manage an extensive patent portfolio on behalf of one of the leading wireless telecommunications companies
- Manage a large U.S. patent portfolio for a Japanese research and development company focused on semiconductor and flat panel displays; the work we do is critical to the company’s success since its revenue model is predicated on its R&
Manage a large U.S. patent portfolio for a Japanese research and development company focused on semiconductor and flat panel displays; the work we do is critical to the company’s success since its revenue model is predicated on its R&D
. . . Hide Representative Experience . . .Thought Leadership/AlertsPersonalized Medicine Patent Watch
Intellectual Property Alert | October 31, 2012 Federal circuit holds an assertion of induced infringement does not require proof of underlying direct infringement by a single party
Intellectual Property Alert | September 10, 2012 . . . View all . . .
The developing legacy of Prometheus: new interim guidelines for patent eligible subject matter
Intellectual Property Alert
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July 16, 2012
How abstract is too abstract for a patent?
Intellectual Property Alert
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July 10, 2012
Personalized Medicine Patent Watch Update
Intellectual Property Alert
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July 9, 2012
Federal Circuit holds the objective prong of the willful infringement analysis is a question of law to be reviewed de novo
Intellectual Property Alert
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June 26, 2012
Webinar Recording: Marketing Your Products and Services Without Losing Your IP
Originally recorded June 14, 2012
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June 19, 2012
Supreme Court unanimously holds § 145 to allow admission of new evidence and de novo review of BPAI decisions by the District of Columbia
Intellectual Property Alert
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April 23, 2012
Webinar Recording: Surviving Mayo v. Prometheus
Originally recorded April 10, 2012
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April 11, 2012
Divided en banc Federal Circuit: only new or amended claims in reexamination give rise to intervening rights
Intellectual Property Alert
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March 19, 2012
Federal Circuit holds res judicata bars new action after reexam, but not infringing actions or device modifications occurring after the previous complaint
Intellectual Property Alert
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March 16, 2012
‘First-to-File' is a year away, but planning should start today
Intellectual Property Alert
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March 14, 2012
Federal Circuit avoids "murky morass" of Section 101 jurisprudence, proceeds directly to Sections 102 and 103
Intellectual Property Alert
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March 7, 2012
Crafting personalized medicine IP protection—walking the thin line between patent eligibility and enforcement
Intellectual Property Alert
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January 10, 2012
USPTO announces: fast-track patent processing available after the filing of an RCE
Intellectual Property Alert
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December 21, 2011
Federal Circuit grants mandamus, transfers patent case against Delaware company out of Delaware
Intellectual Property Alert
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December 9, 2011
Webinar Recording: Top 5 Things You Need to Know about Patent Reform
September 30, 2011
Joint Infringement—Potential Defense Available to Companies Accused of Patent Infringement
Intellectual Property Alert
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September 23, 2011
Patent Reform Primer: Changes to the Grace Period
Intellectual Property Alert
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September 15, 2011
Federal Circuit reduces patentable subject matter for insurance industry patents
Intellectual Property Alert
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September 14, 2011
Ninth Circuit clarifies jurisdiction rules in intellectual property cases brought against out-of-state companies operating on the Internet
Intellectual Property Alert
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August 16, 2011
Seeing red: NY court refuses to enforce single color trademark for shoe design
Intellectual Property Alert
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August 15, 2011
Preamble Defines Field of Invention in Foreseeable Alternative Analysis
August 15, 2011
First Induced Pluripotent Stem Cell (iPSC) Patent Approved by the EPO
Intellectual Property Alert
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August 2, 2011
Federal Circuit issues opinion in ACLU v. Myriad
Intellectual Property Alert
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July 29, 2011
Patent reform primer
Changes to the grace period
Intellectual Property Alert
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July 14, 2011
Eeny, Meeny, Miny, MOVE!—Taking the Guess Work Out of Selecting from the Plethora of Accelerated Patent Prosecution Options
July 1, 2011
New .XXX domain name tentatively scheduled to launch September 7, 2011 — clients are advised they may be able to block certain domains to prevent future use
Intellectual Property Alert
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June 21, 2011
U.S. PTO Restriction Practice: Personalized medicine claims with SNPs
Intellectual Property Alert
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June 13, 2011
Employers (particularly universities): check your invention assignment agreements!
Intellectual Property Alert
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June 7, 2011
Webinar Recording: 2011: The Stem Cell Odyssey Continues
June 3, 2011
Therasense decision highlights specific intent requirement for inequitable conduct determinations
Intellectual Property Alert
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June 1, 2011
Follow-on Biologics legislation has immediate impact on patent holders
Intellectual Property Alert
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May 25, 2011
Protecting personalized medicine innovation in China and India: Are diagnostic methods patentable?
Intellectual Property Alert
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May 17, 2011
A patent in 12 months? But it will cost you!
Intellectual Property Alert
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April 6, 2011
Federal Circuit hears oral argument on Myriad ”gene patents”
Intellectual Property Alert
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April 4, 2011
The Federal Circuit holds that the heightened pleading standards of Rule 9(b) apply to false patent marking claims, finding general allegations of “sophistication” and “knowledge” to be insufficient to state a claim under Section 292
Intellectual Property Alert
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March 15, 2011
Restrictions on the beneficial use of software
Intellectual Property Alert
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November 16, 2010
In Stauffer decision, Federal Circuit finds that qui tam relator has standing to pursue false marking claims under Patent Act
Intellectual Property Alert
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August 31, 2010
Webinar Recording: Bilski v. Kappos: What Does it Mean for Biotech?
July 22, 2010
According to the Patent Office, the machine-or-transformation test is alive and well
Intellectual Property Alert
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July 2, 2010
Supreme Court affirms Federal Circuit’s judgment that risk hedging claims not patent eligible; rejects “machine-or-transformation” test as sole test of patent eligibility of process claims
Intellectual Property Alert
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June 28, 2010
In Solo Cup decision, Federal Circuit affirms district court’s ruling on burden of proof for intent to deceive and false marking with expired patents, and confirms the definition of “offenses”
Intellectual Property Alert
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June 11, 2010
. . . Hide Thought Leadership. . . Press
Media Clips- Attorneys, Tech Transfer Pros Offer Their Take on How to Address New Rules under AIA
Technology Transfer Tactics | March 1, 2013
Boston partner and Patents practice co-leader Ron Eisenstein discusses new key provisions of the America Invents Act (AIA). - Top 40 Angelenos to Know in Intellectual Property Law
Los Angeles Business Journal | October 29, 2012
Los Angeles Patents partner Seth Levy is profiled in this special section highlighting “Who’s Who” in intellectual property in the region. - EXTRA! EXTRA! En Banc Federal Circuit Overrules Its Precedent on Induced Infringement
IP Today | October 16, 2012
Authored by Chicago intellectual property partner Paul Kitch and Chicago intellectual property litigation associate Jason Kunze, this article discusses the law concerning induced infringement of patented methods. Click here to download the article. . . . View all . . .
EventsNixon Peabody Sponsoring NU Venture Challenge
May 8, 2013 Implementing the AIA
September 14, 2012 | Boston, MA Strafford CLE Webinar: Negotiating Patent Indemnification Provisions
July 17, 2012 . . . View all . . .
Webinar: Marketing Your Products and Services Without Losing Your IP
June 14, 2012
AIA, Damages, Ethics, Oh My! Hot Topics in IP
May 23, 2012
| Chicago, IL
Webinar: Surviving Mayo v. Prometheus
April 10, 2012
Top Five Things You Need to Know about Patent Reform
September 19, 2011
| Boston, MA
Hot Topics in IP Law (Complimentary CLE)
June 9, 2011
2011: The Stem Cell Odyssey Continues
May 20, 2011
Rochester CLE Program
November 19, 2010
Webinar: Bilski v. Kappos: What Does it Mean for Biotech?
July 19, 2010
Patentable Subject Matter After the Supreme Court Bilski Opinion
July 1, 2010
Patent Strategies for European Companies Doing Business in the United States
June 23, 2010
Leveraging Social Media in Business
June 1, 2010
. . . Hide Events . . .
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